In this Issue:

The USPTO Announces Clarifications and Waivers of Some Provisions of the New Rules that go into Effect on November 1, 2007

The USPTO has posted an O.G. Notice  clarifying certain aspects of the new rules that become effective on November 1, 2007. The Notice clarifies situations in which divisional applications may be filed and clarifies that PCT Chapter II examination is not considered “examination” for purposes of implementing the new rules. Additionally, the Notice relaxes the requirement to identify applications with a common inventor and owner in certain circumstances and specifies the deadline for identifying claims in a C-I-P application that are entitled to the benefit of the parent filing date. 

 

The USPTO clarification Notice can be found at: http://www.uspto.gov/web/offices/pac/dapp/opla/

preognotice/clmcontclarification.pdf 

 

Also see the BSKB IP Update, Vol. 5 Special Edition (21 August 2007) for a summary of the rule changes effective November 1, 2007.

Summary of the Clarifications and Waivers

·        Applicants will be permitted to file divisional applications and the permitted two continuations of those divisional applications when the USPTO issues a restriction requirement in the “one more” continuing application allowed under the new rules (37 CFR 1.78(d)). This corrects a situation in which a divisional application would not have previously been permitted.

·        The USPTO is waiving the requirement of 37 CFR 1.78 (d) (3) to identify the claims of a C-I-P application that find support in the parent application for those C-I-P applications that have received a first office action on the merits before November 1, 2007.

·        For C-I-P applications filed before November 1, 2007 that have not received a first office action on the merits, the deadline for identifying claims that find support in the parent is February 1, 2008.

·        The USPTO is waiving the reporting requirement of 37 CFR 1.78 (f) (1) in the following circumstances:

·        For applications filed before November 1, 2007, applicant is not required to identify other pending or patented applications having a filing, benefit, or priority date within “two-months” of the filing, benefit, or priority date of the subject application.  Applicants are still required to identify applications having the same filing, benefit, or priority date as the subject application.  

·        For applications filed on or after November 1, 2007 applicant is not required to identify other pending or patented applications that have a filing, benefit, or priority filing date before November 1, 2007 unless (1) they have the same benefit or priority date as the application or (2) the subject application has a filing, benefit, or priority date on or after Nov. 1 that is the same as or within “two-months” of the filing, benefit, or priority date of the other application.

·        PCT chapter II examination is not considered to be “examination” under 37 CFR 1.78(d)(1)(ii)(B). Therefore if the USPTO requires restriction or holds lack of unity in the U.S. national or national stage application, divisional applications may be filed on the non-elected inventions even if those claims were examined in the PCT examination report.

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